IP, Industry and Case Law

Costa Rica has recently signed a landmark validation agreement with the European Patent Office (EPO). This means that Costa Rica will soon become the first country in Central America to allow European patents to be validated within its jurisdiction. Once the validation agreement is in force, Costa Rica will become the seventh EPO validation state, […]

The Netherlands Local Division of the Court of First Instance of the Unified Patent Court (UPC) has recently issued the first UPC decision involving infringement by “equivalence”. Infringement by equivalence occurs when an alleged infringing product or process does not fall within the literal scope of a patent claim, but nevertheless constitutes an infringement because […]

In the competitive world of pharmaceuticals, innovators often employ complex strategies to maintain their market dominance. However, care must be taken to ensure that such strategies are not perceived to contravene the European Union’s competition rules, as a recent EU Commission decision shows. Teva is a pharmaceutical manufacturer which, until the expiration of the basic […]

The Supreme Court has today handed down its judgement in relation to the appeal from the Court of Appeal relating to infringement and validity of SKY trade marks. The judgement unanimously upholds the view of the High Court in finding that Sky had applied for the SKY marks in part in bad faith, because the […]

On Monday 21st October the USPTO granted a patent for a six-stroke internal combustion engine to Porche SE, part of the Volkswagen Group. We investigated why anyone would file such a patent when there will be a ban on all new production of petrol and diesel engines from 2035. The USPTO decision to grant made […]

The UK Government has announced the creation of the Regulatory Innovation Office (RIO), a new initiative aimed at accelerating the approval of cutting-edge technologies such as artificial intelligence, healthcare innovations, space technologies, and drones. This move is part of the government’s broader strategy to foster economic growth by reducing regulatory barriers and promoting innovation. The […]

Qatar joined the Madrid Protocol on 3 May 2024, which came into force as of 3 August 2024. Qatar is the 115th member of the Madrid System. The Madrid System provides the legal framework for the protection of trade marks internationally; by filing a single application and paying one set of fees, applicants can apply […]

The Court of Appeal has upheld the UKIPO’s appeal against the Emotional Perception application and ruled that the artificial neural networks (ANN) in the invention were considered to be computer programs as such and did not provide a technical contribution. The invention related to a media file recommendation system which used an ANN to identify […]

On 3 June 2024, the Unified Patent Court, via one of its Local Divisions in Germany, issued a permanent injunction. This case was among the first infringement cases filed after the UPC started operating on 1 June 2023. The Court has achieved its aim of delivering a decision on the merits in about a year […]

In March 2024, the Government of Jersey made a significant announcement regarding the status of European Union Trade Marks (EUTMs). Changes It has been declared that EUTMs will no longer provide registered trade mark protection in Jersey. This is a change from the previous arrangement where, between October 2000 and April 2009, EUTMs automatically protected […]

A recent case at the EPO Boards for Appeal (T 0209/22) demonstrates an important distinction between “direct and unambiguous disclosure” (for novelty), and credibility that the treatment effect is attained (for sufficiency) for the medical use of known products at the EPO. “Hope to succeed” versus “expectation of success” was also assessed for demonstration of […]

Mariana Köpf, Withers & Rogers attorney at law based in our Munich office, has given her thoughts to Brands Journal about how luxury brands must be enforcement ready to tackle counterfeiters. High-profile court cases such as that between Christian Louboutin and Amazon in 2022, has given clarity to brand owners about who is liable when […]

From 1 April 2024 the European Patent Office are introducing reduced fees for smaller and less experienced patent filers at the EPO. The new scheme offers a 30% fee reduction on a variety of EPO fees for ‘micro entities’ who have filed fewer than 5 European patents in the last 5 years. The applicable ‘micro […]

Yet another David v Goliath trade mark dispute before the UKIPO with David coming out on top. The UKIPO delivers another lesson to big brands on the pitfalls of being overzealous in their trade mark enforcement strategy before the UKIPO. It also brings to mind Zara’s failed attempt to oppose a UK trade mark application […]

Last year we reported here that the Enlarged Board of Appeal had established in G2/21 new guidance for determining when post‑published evidence can be relied upon to support an inventive step at the EPO.   It was, however, unclear how this guidance would be applied going forward.  The written decision of the Board of Appeal in […]

The UK Supreme Court have issued their judgement in Thaler v Comptroller-General thus bringing the DABUS saga to a close in the UK (for now…). Initial headline summary: *Appeal dismissed* (a) Does section 13(2)(a) of the Patents Act 1977 (the “1977 Act”) require a person to be named as the inventor in all cases, including […]

My latest comment on the decision of the Austrian Supreme Court of 22.11.2022 – 4 Ob 171/22, – “Gasteiner Energy Water” which will be published in GRUR-Prax – issue 22- on November 24, 2023, deals with the question of whether the sign “Gasteiner” can be registered as a trade mark for beverages. The Austrian Patent […]

Yesterday, the High Court issued the first patent decision regarding the patentability of AI. The decision seems to have positive implications for the patentability of AI based inventions in the UK. The decision suggests that an Artificial Neural Network (ANN) is not necessarily excluded from patentability as a program for a computer. Both a trained […]

The Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) issued a decision on 10 October 2023 in consolidated cases G1/22 and G2/22, dealing with two questions relating to the right to priority: Is the EPO competent to assess whether a party is entitled to claim priority under Article 87(1) EPC? If the […]

The European Patent Office (EPO) have recently released a new tool to help find investment-ready startups with European patent applications. By allowing other businesses as well as investors search for startups filing patent applications with the EPO, additional information regarding new technologies entering the market will become more widely available. This provides greater investment opportunities […]

The European Patent Office’s “ten day rule” will come to an end later this year following a decision made by the EPO’s Administrative Council in 2022. Under the existing “ten day rule” (provided by Rules 126(2) and 127(2) EPC), postal and electronic notifications from the European Patent Office are deemed to have been received ten […]

Trade mark applicant Grzegorz Mordalski, filed for registration of a trade mark with the Polish Trademark Office on January 21, 2016 for class 30. The Trademark Office refused registration of this trade mark due to an earlier similar European Union trade mark, No. 008291056 ANITA, registered by Anita Food SA for classes 30 and 43, […]

Elon Musk’s decision to rename Twitter as ‘X’ and implement the changes almost immediately, has attracted widespread public attention. But could the speedy rebrand have unwelcome repercussions? The rebranding is thought to be part of a strategic plan by Elon Musk to reinvent Twitter, which he acquired in October 2022 as a multi-purpose platform for […]

“KÖLNER DOM” cannot be protected as a trade mark The “KÖLNER DOM” or Cologne Cathedral, is a world-famous cathedral and a very popular cultural site in Germany. The applicant had applied for the registration of “KÖLNER DOM” as a trade mark in order to commercialise the name for various goods and services, including clothing, souvenirs, […]

On 27 June, a new referral was made to the Enlarged Board of Appeal (EBA) in case T 0438/19. The referral seeks clarification on whether a commercially available product, with an undisclosed composition or internal structure, should be excluded from the state of the art for patentability within the meaning of Article 54(2) EPC. “State […]

Summary The UK Court of Appeal (CoA) confirmed the invalidity of Bristol-Myers Squibb (BMS)’s apixaban patent on 4 May 2023.1  The appeal decision centred on the question of plausibility and is the first UK decision to consider plausibility since the EPO Enlarged Board of Appeal’s decision G2/21. The CoA held that BMS had not presented […]

The Federal Court of Justice (Bundesgerichtshof, BGH) comments on the extent to which the installation of spare parts leads to a new production displacing the exhaustion effect. On 8 November 2022, the Federal Court of Justice delivered its judgement (8 November 2022, X ZR 10/20) in the legal dispute concerning the question of a new […]

In 2021, a referral was made to the Enlarged Board of Appeal (EBA) in case T116/18 concerning whether post-published evidence (i.e., information not available until after the filing date of a patent application) can be used to demonstrate a technical effect in the assessment of inventive step.  The EBA issued its preliminary opinion in October […]

Brazil has ratified the Hague Agreement for the International Registration of Industrial Designs. This means that from 1 August 2023 Brazil can be designated in new international design applications under the Hague system. Brazil is the largest economy in Latin America. International design applications allow applicants to submit a single design application to the International […]

As the drive towards renewable energy use gains pace, there has been an increase in global patent filings relating to battery technology. While lithium-ion batteries currently dominate the battery market, they have several disadvantages. For instance, the manufacture of lithium-ion batteries requires large quantities of energy and water to extract raw materials.1 The high demand […]

When Aldi launched a festive gin bottle with a snow globe effect in a light up bottle few could help but draw comparison with the very similar M&S product launched a year earlier. The visual similarity and the price differential between the M&S version and the Aldi version were out of the playbook that is […]

The start date for the Unified Patent Court (UPC)  is now confirmed as 1 June 2023. German ratification of the UPC Agreement occurred today on 17 February 2023. The UPC will allow companies and inventors to enforce their patents in 17 EU countries in a single court action. The court coming into operation will also complete […]

The European Commission and the European Union Intellectual Property Office have announced a €60.1 million fund to support EU-based small and medium-sized enterprises (SMEs) in protecting their intellectual property rights. The “Ideas Powered for business SME Fund” is a grant scheme which will run from 23 January 2023 to 8 December 2023.  The fund will […]

In 2019, the European Patent Office’s (EPO) Guidelines for Examination were updated to remove the “purposive selection” requirement when assessing the novelty of sub-ranges. This meant it was no longer necessary for an applicant to demonstrate that the selected sub-range was associated with a particular technical effect. This recent decision from the Board of Appeal […]

In a recent decision, T 1473/19, the Board of Appeal of the European Patent Office (EPO) revoked a patent for added matter due to the lack of a single comma in the claims. Patent attorneys are often accused of pedantry when it comes to word selection and grammar. This case is a prime example of […]

ECJ, Judgment of 22.12.2022 – C-148/21, C-184/21 Louboutin’s best-known goods are luxury red-soled women’s shoes. He has registered the red colour of the outer sole as a protected trade mark in the EU, among other countries. Third-party adverts appeared on the online marketplace Amazon for shoes with red soles, which Louboutin says are being marketed […]

Bad faith in filing applications (ECJ 07.09.2022 – T-627/21 – Segimerus/EUIPO [Monsoon]) It is to be considered abusive if an EU trade mark is filed claiming priority according to Art 34 (1) EUTMR and, before the expiry of this six-month period, national trade mark applications were filed in succession every six months, alternately in Germany […]

Risk of confusion between “NORTH FACE” and “THE DOG FACE” due to the highly distinctive character of the earlier mark (OLG Frankfurt am Main, Beschl. v. 28.06.2022 – 6 W 32/22 – “THE NORTH FACE”/“THE DOG FACE”) In principle, there is no high degree of similarity between the mark “THE NORTH FACE” and the contested sign […]

It has recently been reported by CIPA that the “ten-day rule” will come to an end following a decision from the Administrative Council of the EPO. Under the existing “ten-day rule” (provided by Rule 126(2) EPC), postal notifications from the European Patent Office are deemed to have been received ten days after their date of […]

In 2021, a referral was made to the Enlarged Board of Appeal (EBA) in case T116/18 concerning whether post-published evidence (i.e., information not available until after the filing date of a patent application) can be used to demonstrate a technical effect in the assessment of inventive step.  The EBA has now issued its non-binding preliminary […]

After a few attempts, a competitor has finally managed to get the famous Moon Boot’s 3-D European Union Trade Mark (EUTM) No. 10168441 cancelled. Read on to hear how they did it. On 20 March 2012, Tecnica Group SpA’s 3-D EUTM application for protection of the Moon Boots was registered under No. 10168441 for Classes […]

China can be designated in new Hague International design filings from 5 May 2022. What does this mean? Designs can now be protected in China and other countries of the Hague system, including the EU, Japan, Korea, the US and the UK, in one application. This will be of benefit to international applicants and Chinese […]

China has now ratified the Hague Agreement for the International Registration of Industrial Designs. This means that from 5 May 2022 China can be designated in new international design applications under the Hague system. International design applications allow applicants to submit a single design application to the International Bureau of the World Intellectual Property Office and […]

The unitary patent (UP) system offers much greater simplicity for users. Instead of having to validate and renew a granted European patent on a country-by-country basis, innovators would be able to achieve the same protection with a single Unitary Patent maintained by a single renewal fee. That means fewer deadlines to remember and fewer reminder […]

The first Unitary Patents (UP) are expected to be registered and in effect before the end of 2022 and will cover at least 17 countries. With a population of over 300 million people and a GDP valued over $13 trillion, a Unitary Patent would cover the majority of the European Economic Area. Future Unitary Patents […]

The Unitary Patent Court (UPC) would have a common process and timeline for all of its divisions throughout Europe. This would increase the clarity of procedure before the UPC and reduce complexity and delay. It means that a UPC litigator can be assured that a case brought in Stockholm would be handled the same as […]

English will be the primary language of the Unitary Patent (UP) system. All UPs will have an English version. For businesses in the UK, US and other English-speaking countries, there is a clear advantage to being able to litigate in one’s mother tongue. This will be possible at all Unified Patent Court hearings. Costly translations […]

Where previously a European patent may have only been validated in, say, five EU countries, the Unitary Patent will cover at least 17 of the 27 member states for a lower cost to that of the five previously. These “bonus” countries could provide unexpected benefits to companies. Infringements can arise anytime and anywhere, so the […]

The Unified Patent Court (UPC) would resolve cases much more quickly than is possible under the current system. If a case is brought, it would be processed, and a judgment passed down within a year. This means that businesses can bring their cases to court more quickly if needed. The Court also intends to hear […]

SMEs can greatly benefit from the Unitary Patent (UP) and the UPC. Not only does the UP provide substantial savings on renewal fees across the entire (at least) 17 UP territories, but the UPC also offers several other benefits to SMEs. Firstly, the UPC offers a centralised approach for European IP disputes (substantially cheaper than […]

It is expected that the Unified Patent Court (UPC) would provide robust decisions as a result of the standardised practices between divisions and the diverse and well-trained pool of judges. This ensures that issues can be expertly tried, and decisions relied upon in territories previously unaccustomed to handling large volumes of patent litigation. This consistency […]

Firstly, the use of a single court system avoids the scenario of different courts in different countries reaching conflicting opinions on the issue of infringement. Even more appealingly, as the Unitary Patent (UP) covers a large number of European territories, it would be possible to use the court to seek relief for infringing activities happening […]

The Unitary Patent system would be cost effective for everyone. It becomes cheaper per country when compared to the traditional bundle of European patents as you seek to protect your invention in an increasing number of countries. Specifically, the annual cost of renewing a Unitary Patent would be equivalent to the cost of renewing individual […]

On 18th January, Austria deposited its instrument of ratification of the Protocol on the Provisional Application of the Unified Patent Court Agreement (UPCA). Since Austria was the 13th country to do so, this protocol has now entered into force, such that many of the articles of the UPCA have now entered into “provisional application”.  This […]